Responding to a Trademark Examiner's Objection

If you have filed for a federal trademark registration at the U.S. Patent and Trademark office, there is a reasonable chance that you have received (or will receive) an objection from a trademark examiner. How should you respond?

Trademarks are an important type of intellectual property for many businesses. If you have filed for a federal trademark registration at the U.S. Patent and Trademark Office (PTO), there is a reasonable chance that you have received (or will receive) an objection from a trademark examiner. An objection simply means that the PTO is refusing to immediately register your mark based upon some issue with your initial application.

Often, the objections are easily corrected. For example, perhaps you forgot to fully complete the application form, or perhaps the PTO wants you to furnish a new specimen with greater detail. But sometimes, the objections are more complex and require legal research and writing an argument in response. An experienced trademark lawyer will be able to help guide you through the objection process. However, if you cannot afford to hire an attorney, here are some suggestions for dealing with the matter yourself.

Response Templates Are Readily Available

Fortunately, thousands of real-life responses to trademark objections via the PTO's Trademark Document Retrieval (TDR) system, or alternatively via Trademark Applications and Registrations Retrieval (TARR). You can get to both from the PTO's trademark home page. To find these documents, plug the appropriate serial number into TDR. For example, try your own serial number and you will see a list of all the filed documents. Click on any title and you will see the document (or check the box and download a free PDF).

Use the TTAB and TTABlog

As you will see, accessing the documents is not difficult. The challenge is finding those trademark applications that match your situations so that you can crib from the right documents. In other words, you want to piggyback on the work of another applicant who succeeded with similar facts.

One way to find cases similar to yours is at the TTABlog, which closely covers the proceedings of Trademark Trial and Appeals Board (TTAB). Try searching the blog for terms similar to the ones in your objection. For example, if your mark is alleged to be "geographically descriptive," search for that term and copy the relevant serial numbers for the trademarks in dispute. Check the responses in those TDR files.

TTAB opinions and documents never appear in the TDR, but can be obtained at the Trademark Trial and Appeal Board Inquiry System website. Simply enter the application or registration number, proceeding number, or other identifying material. The PTO databases will usually post a notice in the TARR status database, noting that an opposition has been filed.

There is another very handy database maintained at TTAB Across the Board, which allows you to type in phrases like "geographical descriptiveness" in the Search Documents box, and get a list of TTAB cases where that shows up, and clickable access to the specific documents.

Objections and Objections

Generally, you will be responding to an examiner's Office Action refusing or rejecting your application. (Here's a helpful system for responding.) You should be aware that the public (including competitors) can also file objections to your trademark application during a thirty-day period following publication of your mark in the Official Gazette. That requires different formalities, though it may involve similar language and legal arguments. A competitor may object, for example, to alert the PTO to its competing mark even if the PTO did not itself realize the potential conflict.

Thinking Like an Examiner

Finally, if you are curious as to the starting point for examiner objections, you should review Section 1200 of the Trademark Manual of Examining Procedure. It is available online and is searchable by topic.

The Manual shows many of the potential objections that an examining attorney might have to a mark. This allows you to "think like an examiner" both before you file an application and after you receive a potential objection. Its contents may help you to clarify your response.

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